From Brunelleschi to Bilski

Yesterday, the Supreme Court finally released its opinion in the case of Bilski v. Kappos, the decision that was expected to settle with some degree of finality whether business methods are patentable and under what conditions. It was a long wait — a recent commentator quipped a week before the opinion was issued that the “Supreme Court has unanimously decided to drive patent attorneys crazy.”

As patent attorneys study the Court’s ruling, which in very many ways leaves things pretty much as they were — but importantly now with the imprimatur of the highest court in the country — my own thoughts turn to the Tuscan city of Florence. And more specifically to the magnificent dome of the Santa Maria del Fiore, in many ways defining the cathedral that is the heart of that city.

The famous dome was the largest in the world for half a millennium, being surpassed only in 1928 when the Leipzig dome was finally constructed using a completely new technology — with reinforced concrete instead of traditional masonry techniques. Even today, the Florentine dome of the Santa Maria del Fiore remains larger than dome of the Capitol Building in Washington DC, just down the street from the Court in which the Bilski decision was handed down.

The Florentine dome was the masterpiece of Filippo Brunelleschi, who was also the first person to be granted a patent for a technical invention — a technique for transporting marble up the Arno river from the quarries at Carrara to Florence. His technique, which made use of a sort of barge called Il Badalone (“the monster”), very much simplified the process, but he refused to disclose to others how he did it. The Republic of Florence accordingly granted him a patent and in its grant recited the basic bargain that remains at the heart of every patent system in the world:

The admirable Filippo Brunelleschi, a man of the most perspicacious intellect, industry and invention, citizen of Florence, has invented some machine or kind of ship, by means of which he thinks he can easily, at any time, bring in any merchandise and load on the Arno and on any other river or water, for less money than usual, and with several other benefits to merchants…. [H]e refuses to make such machine available to the public, in order that the fruit of his genius and skill may not be reaped by another without his will and consent….. [I]f he enjoyed some prerogative concerning this, he would open up what he is hiding and would disclose it to all.

Governments do not issue patents out of the goodness of their hearts nor as some way of rewarding inventors. They issue patents for the purely practical objective of inducing inventors to disclose their inventions to the public, offering a state-backed right to exclude others from using their invention without permission for a limited time. In this way, innovation is spurred by having other inventors learn of the inventions and apply their own insight to develop further improvements. If patents fail to promote progress, then the system is not functioning as it should.

Should methods of doing business be patentable? This is a question that modern society has struggled with. Is there any real reason to suppose that the same bargain that was struck with Brunelleschi for “the monster” should not also be struck with those who invent new and efficient ways of engaging in financial transactions, providing insurance, holding auctions, or any of the other was of doing business? Bilski provides an implicit answer — while every justice agreed that Bilski’s method of financial hedging was not patentable, five of the justices came to that conclusion because it was expressed as an abstract idea, but acknowledged that “the Patent Act leaves open the possibility that there are at least some processes that can be fairly described as business methods that are within patentable subject matter.”

Four of the justices disagreed with the underlying reasoning. At the heart of their disagreement is a view that many share: “Business innovation … generally does not entail the same kinds of risk as does more traditional, technological innovation. It generally does not require the same ‘enormous costs in terms of time, research, and development.’… The primary concern is that patents on business methods may prohibit a wide swath of legitimate competition and innovation.”

Today, it is clear that business methods are patentable within the United States, provided they meet the other requirements set forth in the Patent Act. They must legitimately be novel, not obvious, and disclosed to the public with particularity.

Brunelleschi’s dome is an enduring edifice, a symbol to me of the achievements of the Renaissance and of the wonder that people create when their inventive capacity is encouraged. What all the justices in Bilski want — what we all want — is to foster that same kind of innovation in the sphere of business. Time will tell whether they have achieved that.

The author, Patrick M. Boucher, is a patent attorney living near Denver, Colorado and working at Marsh Fischmann & Breyfogle. He holds a Ph.D. in physics as well as a J.D. He is an active member of the American Physical Society, and is admitted to practice law in the states of Colorado and New York, as well as to practice before the U.S. Patent and Trademark Office. He is also a member of the Authors Guild and of the Colorado Authors League.